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Patent and Trademark Law
University of Connecticut School of Law
Greene, Hillary

I.                     Early history:
Venetian Patent Act:
First real patent system, regular administrative apparatus for granting patents, 15th Cent
Venetian glass blowing technique- lots of economic cost to creation/perfection to art
                                                               i.      Devices
                                                              ii.      New and ingenious- similar to novel and non-obvious, what is the inventive step?
                                                            iii.      Reduced to perfection- have to fully develop invention on your own, different from today’s reduction to practice
1.       constructive reduction to practice- fully conceived of it
2.       prove that it actually works (benefit of actual reduction) v. get patent earlier in invention process (protect investment)
3.       new & useful
4.       not previously made in commonwealth
                                                            iv.      geographic scope (territories & towns)
                                                              v.      duration- period of 10 yrs (today 20 yrs from date of filing)
                                                            vi.      penalties of infringement- have to pay fine but gov can claim right to use the device as necessary (eminent domain)
–      part of TRIPS/ globalization- worried about people dragging out the prosecution & gaming the system
–      procedure to determine remedy (magistrate)
–      key features:
ègives ABSOLUTE exclusivity- don’t have opportunity for someone to create the same thing!
èSociety wants to incentivize efficient innovation- don’t want duplicate inventors to improve society- set off: if improvidently created- cant greatly decreased improvements
U.S. Patent System
–      overriding issue= predictability v fairness (ex: 1st to file v 1st to invent)
–      appropriate subject matter to be covered- very controversial w/ business method patents
–      normally a 1 size fits all system
o   still some mechanism of calibration- ex: diff standards for deciding no-obviousness
–      Article 1, Section 8: congress shall have the power to promote the progress of science and useful arts by securing for a limited times to authors and inventors the exclusive right to their respective writings and discoveries
o   Created to avoid the disputes b/w states that had arisen
o   Reaction to England’s patent system which had a bad name- strong anti-monopoly sentiment
o   Shall have the power to= MAY/CAN- not saying we will but says we can, show that is not inconsistent w/ anti-trust sentiment
§ No right to patent or patent system- CAN
§ Explicitly states that MUST promote- has to have a social benefit
§ Limited time period
§ Mechanism of exclusivity- not same as monopoly
èwhy mandate patents?
o   Wanted to discourage state controlled monopolies (England: king granted them)
–      monopoly v patents:
o   patent= exclusive right for a given technology
o   monopoly over X
o   how valuable the monopoly?
§ Depends on worth of the invention- can have monopoly over something but 10 other people can have the same thing
§ Whether it is valuable depends on the amount of substitutes that exist
–      TRIPS- Trade Related Aspects of Intelligent Property- countries seeking membership in the WTP must enact certain minimum standards of IP protection- agreement was immediately implemented by legislation
–      written by the patentee- they have a vested interest not the examiner
o   try to make it as broad as possible, most protection, more likely examiner will see it in prior art searches or others w/ avoid the technology or pay royalties
–      filing date- important in terms of what prior art applies and the date of the patent
o   patents prior to June 8, 1995 terminated 17 yrs after the date of issue
o   after June 8, 1995- patents term generally ends 20 yrs after filing date- although there are extensions for certain bureaucratic delays (direct result of TRIPS agreement)
–      inventor and assignee- who actually “owns” the patent, usually a large corporation
–      field of search- indicates everything examiner was looking @- provides others with link to the prior art
o   our system is highly focused on public disclosure- quid pro quo
§ patent MUST disclose and enable someone to make/use the patent
o   also includes other publications, not all prior art is a patent, esp w/ new technology
–      claims- meets and bounds of what you are claiming exclusivity over
o   key components of patent system but cannot be fully understood w/o remainder of the patent
o   only have to be enabled when you read the entire specification
o   language means very particular things, has been litigated over frequently
§ consisting (closed claim) v comprising ( anything consistent of what is listed plus additional elements later added- strongest) v. consisting essentially of (in-b/w format- covers additions as long as they don’t make the invention essentially diff from the claimed invention)
o   abstract- brief summary of the technical disclosure of the patent- not a requirement of the Patent Act but the PTO’s regulation have imposed the requirement for purposes of “enabling the PTO and the public generally to determine quickly from a cursory inspection the nature and gist of technical disclosure”
o   drawings-  required by the Patent Act to submit 1 or more drawings “where necessary for the understanding of the subject matter sought to be patented”
o   specification- must provide a “written description of the invention and of the manner and process of making and using it” MUST also disclose the best mode known to inventor carrying out the invention
§ written description
§ enablement
§ best mode- all have to be satisfied @ the time of filing (cannot add new matter even to fulfill the statutory requirements)
èfew patents issued are ever litigated over b/c the majority of patents don’t have any commercial value
1)       Preamble- introduces and identifies the basic nature of the invention- generally used to identify what kind of invention is being claimed- should be as broad as possible, shouldn’t limit the innovation to a specific type of thing
2)       Transition- formal part of claim that serves a vital role in defining claim breadth (consisting, comprising, comprising essential of)
3)       Claim Drafting- a) lists all the elements of an invention, b) describes how they interact
Very formalistic, really an art form
Create narrowing, dependent claims also b/c when you’re in front of a jury/judge in litigiation, it is best to have the other party infringe a narrow claim- don’t have to debate abroad claim
4)       Improvements- Jepson claims- specifically designed for claiming improvements, preamble is long, setting for ALL elements known, transitional phase- “wherein the improvement comprises” then specifies the inventors improvement
5)       Means-Plus Function- 112 §6- means for doing X where X is function- patent claims construed to cover the corresponding structure/material/acts described in spec and all equivalents thereof
ètherefore can be broad or narrow depnding on the structures disclosed in the spec!
–      Goal of Patent Drafting:
o   Draft something that is BOLD but VAGUE
o   Why would you

early enough so that one skilled in the art can understand it well enough to make and use it
–      must be good enough to prevent the skilled artisan from having to undertake a great deal of experimentation to reproduce the claimed invention
–      must articulate clearly enough so as to enable a PHOSITA
–      question of LAW- judges decide, no deference to patent examiner
–      at what pt are we requiring PHOSITA to become co-inventor?
–      Gap b/w what is claimed and enabled- how are you going to bridge it (ex: prior art, outside info??)
The Incandescent Lamp Case- US 1895:
–      sawyer and man patent for electric light- race to get the best “burning paper”
–      Claim 1: “an incandescing conductor for an electric lamp, of carbonized fibrous or textile material”
–      Specification- “the advantages resulting from the manufacture of the carbon from vegetable fibrous or textile material”
–      Edison comes along and experiments on thousands of material discovers a bamboo w/ peculiar qualities
–      Ct viewed this as unwarranted expansion of what was known
–      HOWEVER, patentee not compelled to restrict yourself entirely to what known- just went too far here
o   some quality come to all, qualities peculiarly adapted for use
–      where description is so vague as to require “independent experiments” then too indefinite
–      questions to ask:
1)       if the inventor of the accused light actually saw the specification, would he be helped if so how much?
2)       Was there a unifying characteristic b/w materials?- would have unlimited undue experimentation
3)       If you don’t enable, shouldn’t get patent b/c you can actually harm innovations?
o   Would confer a right to exclude others from finding a better material- rhetoric on the spirit of the patent monopoly and impact on innovation
–      In re Wands:
o   Mind the gap b/w what is claimed and what is enabled
o   Immunoassay utilizing monoclonal high infinity IgM antibodies (method claim for detecting/measuring Hep B surface antigens by using high affinity monoclonal IgM antibodies as reagents)
o   Rejected by PTO and Board as non enabling, on how to make antibodies
o   REVERSED by Fed Circuit
§ Logic is that you cant practice the invention IF you don’t have the starting materials
–      undue experimentation= standard of reasonableness
o   very fact specific, nature of invention and state of art (Forman factors)
–      issue: what data are we looking @ 4/9 tested were successful or 4/134 created were successful?
–      Ct doest want to incentive people NOT to make untested cell lines (by characterizing them as failures demonstrating unpredictability/ unreasonability
–      Technology and technique for making antibodies and screening is well known and used in the art so therefore there is no reason to think any differently in this case- lots of failure inherent in process
–      Burden of proof: